Trials@uspto.gov
`571-272-7822
`
`
`Paper 10
`Entered: October 23, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GOOGLE INC. and YOUTUBE, LLC,
`Petitioners,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`Cases IPR2014-00977 (Patent 6,415,280 B1)
`IPR2014-00978 (Patent 7,802,310 B2)
`IPR2014-00979 (Patent 6,928,442 B2)
` PR2014-00980 (Patent 5,978,791)1
`
`
`
`
`Before JONI Y. CHANG and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses the same issues in all of the above-identified cases.
`Therefore, we issue one Order to be filed in all cases. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 10
`Entered: October 23, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GOOGLE INC. and YOUTUBE, LLC,
`Petitioners,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`Cases IPR2014-00977 (Patent 6,415,280 B1)
`IPR2014-00978 (Patent 7,802,310 B2)
`IPR2014-00979 (Patent 6,928,442 B2)
` PR2014-00980 (Patent 5,978,791)1
`
`
`
`
`Before JONI Y. CHANG and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses the same issues in all of the above-identified cases.
`Therefore, we issue one Order to be filed in all cases. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`
`
`
`
`
`IPR2014-00977 (Patent 6,415,280 B1), IPR2014-00978 (Patent 7,802,310 B2),
`IPR2014-00979 (Patent 6,928,442 B2), PR2014-00980 (Patent 5,978,791)
`
`
`
`On October 20, 2014, a conference call was held between respective
`counsel for the parties and Judges Chang and Zecher. As an initial matter, we
`notified the parties that the papers2 filed by Petitioners Google Inc. and
`YouTube, LLC (collectively “Google”), on October 17, 2014, in the above-
`identified proceedings (“the Google proceedings”), have been expunged,
`because Google did not seek or have prior authorization before filing the
`papers. See 37 C.F.R. § 42.7(a).
`During the conference call, Google requested leave to file an
`opposition to each of the Motions to Terminate that were filed jointly by
`Rackspace US, Inc. and Rackspace Hosting, Inc. (collectively, “Rackspace”)
`and Patent Owners PersonalWeb Technologies, LLC and Level 3
`Communications (collectively, “PersonalWeb”) in IPR2014-00057, IPR2014-
`00059, IPR2014-00062, and IPR2014-00066 (“the Rackspace inter partes
`reviews”). Google argued that the termination of the Rackspace inter partes
`reviews would impact the related district court proceedings that are stayed in
`light of those inter partes reviews and other related inter partes reviews.3
`Google further alleged that the termination would prejudice Google, who has
`
`
`2 IPR2014-00977, Paper 8; IPR2014-00978, Paper 9; IPR2014-00979, Paper 8;
`IPR2014-00980, Paper 8.
`3 The other related inter partes reviews include: IPR2013-00082, IPR2013-
`00083, IPR2013-00084, IPR2013-00085, IPR2013-00086, and IPR2013-00087
`filed by EMC Corporation and VMWare, Inc., as well as IPR2013-00596 filed
`by Apple, Inc.
`
`
`
`2
`
`
`
`IPR2014-00977 (Patent 6,415,280 B1), IPR2014-00978 (Patent 7,802,310 B2),
`IPR2014-00979 (Patent 6,928,442 B2), PR2014-00980 (Patent 5,978,791)
`
`
`filed a Motion for Joinder in each of the Google proceedings, seeking to join
`its proceedings with the Rackspace inter partes reviews.4 Paper 3.5
`PersonalWeb opposed, arguing that Google is not a party to the
`Rackspace inter partes reviews and, therefore, authorizing Google to file
`oppositions to the Joint Motions to Terminate the Rackspace inter partes
`reviews would prejudice PersonalWeb. PersonalWeb further noted that
`Google’s Motions for Joinder were not filed timely in accordance with
`37 C.F.R. § 42.122(b).
`Upon consideration of the parties’ contentions, we are not persuaded by
`Google’s arguments. Rather, we agree with PersonalWeb that Google is not a
`party to the Rackspace inter partes reviews and, in light of the circumstances,
`authorizing Google to file additional briefing at this stage of the proceedings
`would prejudice PersonalWeb. Google had the opportunity to file timely its
`own Petitions for inter partes review. Moreover, in its Motions for Joinder,
`Google already has briefed us on the issues related to the termination of the
`Rackspace inter partes reviews. See, e.g., Paper 3, 1, 3–5. Additional briefing
`from Google on those issues essentially would amount to either supplemental
`briefing to its Motions for Joinder or a Reply to PersonalWeb’s Oppositions to
`the Motions for Joinder.
`We further observe that additional briefing on the issues related to the
`termination of the Rackspace inter partes reviews is not necessary. The parties
`
`
`4 Specifically, Google seeks to join IPR2014-00977 with IPR2014-00059,
`IPR2014-00978 with IPR2014-00062, IPR2014-00979 with IPR2014-00066,
`and IPR2014-00980 with IPR2014-00057.
`5 For the purpose of clarity and expediency, we treat IPR2014-00977 as
`representative, and all citations are to IPR2014-00977 unless otherwise noted.
`3
`
`
`
`
`
`IPR2014-00977 (Patent 6,415,280 B1), IPR2014-00978 (Patent 7,802,310 B2),
`IPR2014-00979 (Patent 6,928,442 B2), PR2014-00980 (Patent 5,978,791)
`
`
`to the Rackspace inter partes review—Rackspace and PersonalWeb—already
`provided sufficient information, including the status of the related district court
`proceedings, in their Joint Motions to Terminate. See, e.g., IPR2014-00057,
`Paper 34, 6–7. When we decide whether to grant the Joint Motions to
`Terminate the Rackspace inter partes reviews, we will be mindful of the
`potential impact of the terminations on those district court proceedings, as well
`as balance the potential impact with the strong public policy reasons that favor
`settlement between the parties to a proceeding. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
`Accordingly, it is:
`ORDERED that the following unauthorized papers filed on
`October 17, 2014, in the Google proceedings have been expunged: IPR2014-
`00977, Paper 8; IPR2014-00978, Paper 9; IPR2014-00979, Paper 8; IPR2014-
`00980, Paper 8; and
`FURTHER ORDERED that Google’s request for leave to file an
`opposition to each of the Joint Motions to Terminate filed in the Rackspace
`inter partes reviews is denied.
`
`
`
`4
`
`
`
`IPR2014-00977 (Patent 6,415,280 B1), IPR2014-00978 (Patent 7,802,310 B2),
`IPR2014-00979 (Patent 6,928,442 B2), PR2014-00980 (Patent 5,978,791)
`
`
`
`For PETITIONERS:
`
`Jennifer A. Sklenar
`Alissa H. Faris
`Emily C. Hostage
`ARNOLD & PORTER LLP
`Jennifer.Sklenar@aporter.com
`Alissa.Faris@aporter.com
`Emily.Hostage@aporter.com
`
`
`
`For PATENT OWNERS:
`
`Joseph A. Rhoa
`Updeep S. Gill
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`
`
`
`
`5
`
`
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